Title 35, Section 122 of the U.S. Code mandates that every patent application be published "promptly" after 18 months have passed after the filing date (if the application is still pending at that time--that is, it hasn't issued as a patent nor been abandoned). The publication of pending patent applications in the U.S. is a relatively new concept. This blog post discusses why the Patent Office publishes patent applications and the potential benefits and drawbacks of having your application published.

History

Before the year 2000, patent applications were not published by the USPTO. Publication only occurred upon granting of the patent. However, the American Inventors Protection Act of 1999 added the requirements of Title 35, Section 122 so that unless the applicant opts out, the patent application will be published.

Nonpublication Request

At filing of a patent application, the applicant can specify that he does not want his application published. For the nonpublication request to be valid, the applicant must certify that: 1) the application has not been the subject of a foreign or international application filed in another country, and 2) the applicant's intent is that the application will not be the subject of a foreign or international application filed in another country. If the applicant is not sure whether she will file a foreign patent application covering the same subject matter, she may not file a nonpublication request--she has to have the intention of not filing the foreign or international patent application to properly request nonpublication.

In cases where the applicant has submitted a nonpublication request, the patent application will not be published, but will be held confidential by the patent office until the patent is granted.

A nonpublication request can later be rescinded. In fact, if the applicant later decides to file a foreign or international application claiming the same subject matter, she must rescind the nonpublication request before the foreign filing date--or she must file a notice of foreign filing to the patent office. If the notice of foreign filing is not filed within 45 days after the foreign patent application is filed, the applicant's U.S. patent application will be deemed abandoned.

Besides patent applications for which the applicant has filed a nonpublication request, the USPTO will not publish the following types of applications:

  • provisional applications;
  • design applications;
  • reissue applications; and
  • no longer pending (abandoned or issued) patent applications.

Publication

The patent office provides applicants the projected publication date of the application by sending the applicant a filing receipt with that projected date--a paper copy of the patent application publication is not mailed to the applicant (the publication is available for viewing by anybody at the USPTO website, www.uspto.gov).

The publication process takes about fourteen weeks. Publication occurs on Thursday of each week. The applicant is charged a publication fee of $300 (per the USPTO fee schedule effective September 26, 2011). If the applicant desires early publication (earlier than the typical 18 month schedule) he can submit a request for early publication, which is normally granted if the patent application has all the necessary parts (in other words, an executed oath or declaration was filed and the filing fee was paid). Redactions to the application can also be requested under certain conditions.

Amendments to the Application Prior to Publication

The patent application publication may also include amendments made to the application--including amendments to the specification, abstract, claims, or drawings, provided that such amendments are submitted roughly four months prior to the projected publication date. If the patent application has been assigned and the assignee would like the published application to reflect the current ownership, the assignment information must be provided on the application transmittal letter or the application data sheet filed with the application.

Request for Republication

If the applicant spots errors in the published application or wants the published application to reflect subsequent amendments, he may file a request for republication, which must include:

  • a copy of the application;
  • the publication fee ($300); and
  • a processing fee ($130).

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